Appeal No. 1999-1276 Page 11
Application No. 08/318,574
finding an effective amount of catalase that will completely decompose hydrogen
peroxide without substantially affecting any peracid present in the sample (see
specification, p. 12). In this way, appellants can proficiently quantitate organic
peracids without interference from a relatively large quantity of hydrogen peroxide.
However, it is impermissible to use the disclosure from appellants'
specification as a blueprint to reach the claimed invention from the prior art
disclosure. "When prior art references require selective combination by the court to
render obvious a subsequent invention, there must be some reason for the
combination other than the hindsight gleaned from the invention itself." Uniroyal Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 118 S.Ct. 1548 (1988). Nevertheless, one cannot rely on appellant's
disclosure to support a case of obviousness. "Obviousness can not be established
by hindsight combination to produce the claimed invention," In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). Since the only reason for
employing catalase as claimed is provided by the specification, we conclude that
the examiner has not met the burden of establishing a prima facie case of
obviousness of the claims over Heath, Bittner, Clements '210 and Clements '566.
The rejection of claims 1, 8, 10-12, 15 and 19-27 under 35 U.S.C.
§ 103(a) as over the combination of Johnson in view of each of Heath, Bittner,
Clements '210 and Clements '566 is reversed.
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